Gowling WLG (International) Inc - Russia
According to Russian and Eurasian patent regulations, an application must relate to one invention or a group of inventions. In the latter case, all of the inventions in the group must be linked so as to form a single general inventive concept, which meets the unity of invention requirement. However, there are differences between the Russia Patent and Trademark Office (Rospatent) and the Eurasian Patent Organisation’s rules for determining whether claims meet this requirement.
Whether a set of claims fulfils the requirement of unity of invention is based on its contents, with special attention paid to independent claims. If one independent claim comprises alternatives, an assessment also must be carried out.
With both organisations, in the event of a lack of unity, the applicant is invited to respond within three months of notification. They are then asked to select which group of inventions is to be examined or to amend the claims to comply with the requirement. If the applicant does not respond, the examination is carried out for the claims belonging to the group of inventions that is listed first in the claims. The applicant can file one or more divisional applications for the remaining groups of inventions.
According to the Eurasian Patent Convention, the unity of invention requirement is considered to be met only when there is a technical relationship among the claimed inventions, which involves one or more of the same or corresponding special technical features (ie, features that define a contribution that each of the claimed inventions makes over the prior art). Lack of unity can be a priori or a posteriori. The latter results from a lack of novelty or an inventive step of the subject matter of one or more independent claims. This approach is similar to that of the EPO and is also used for Patent Cooperation Treaty applications at the international phase.
However, if the claims relate to subject matter of different categories, then one independent claim must contain a reference to the other(s) or all essential features thereof. Therefore, even though independent claims of different categories comprise the same or corresponding special technical features, their scope should be limited by this reference. For example, for a claim set comprising a process claim and a claim for an apparatus to carry out this process, the apparatus claim should specify that it is specifically designed for this process.
In addition, if a group of inventions relates to subjects of the same category (variants), the unity of invention requirement is met if the inventions are based on the same principle (ie, there is a relationship between the features of the inventions defining the technical effect).
According to Russian patent law, the unity requirement for a group of inventions is met if:
- one invention is intended for the production of another;
- one invention is intended for carrying out another;
- one invention is intended for use by another or in another; and
- in cases when inventions relate to the subject matter of the same category (eg, several compounds, several methods or several devices), they have the same purpose and provide the achievement of the same technical effect (variants).
Similarly to the Eurasian regulations in Russian regulations, if claims relate to subjects of different categories, then one claim should contain reference to the other(s) or all essential features thereof.
However, the concept of ‘special technical features’ is not applied in Russia. Below are the key distinctions in Rospatent’s approach:
- Non-unity a posteriori is not applied.
- The claim set can comprise independent claims with no common or corresponding technical features. For example, if an invention relates to a process that is carried out using two different devices, then the claim set can comprise a process claim and two device claims, even though the latter comprise no common or corresponding technical features.
- When a claim defines chemical or non-chemical alternatives (a Markush claim), there is no requirement that all alternatives must be of a similar nature. However, in this case, alternative definitions can be applied to a feature that provides the achievement of the same technical effect in combination with other features of the invention only.
When an international application enters the national phase in Russia, there is an option to select either the Russian or Patent Cooperation Treaty procedure for assessing the fulfilment of the requirement of unity of invention.